DETAILED ACTION
The amendment filed 09/17/2026 has been entered.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosures of the prior-filed applications, Application Nos. 18/314,511 and 17/469,389, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claims 2-9 contain limitations (regarding the bag) not supported by the parent applications. Therefore, claims 2-9 are not entitled to the benefit of the prior application. Claims 1 and 10 are given an effective filing date of 09/08/2021 while claims 2-9 are given an effective filing date of 02/28/2025. See MPEP 211.05.
Terminal Disclaimer
The terminal disclaimer filed on 09/17/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 12,252,861 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 09/17/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 11,686,061 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Trout (2023/0272589) in view of Turzillo (3,099,911).
With regard to claim 2, Trout discloses a method of moving a ground coupled member (abstract, “pipeline”), comprising the steps of: driving at least one casing (16) into a soil proximate to the ground coupled member (abstract); deploying a pivoting wand (22) from the casing about a pivoting axis, the pivoting wand having a plurality of cutting nozzles (26) that are coupled to a fluid conduit (20) having a longitudinal extent in the casing relative to a longitudinal axis (fig. 1), the cutting nozzles being fixed to the wand and at least one of the cutting nozzles being directed parallel to the pivoting axis of the pivoting wand (fig. 1), at least one cutting nozzle being directed perpendicular to a direction of at least one other cutting nozzle on the pivoting wand; pressurizing the fluid conduit to thereby send fluid through the cutting nozzle to soften the soil in a direction in which the wand deploys (abstract); rotating the pivoting wand (abstract); conducting the softened soil up through the casing to form a cavity in the soil at least partially beneath the ground coupled member (abstract), the cavity in the soil having a shape reflective of the movement of the pivoting wand in the rotating step; positioning a portion of a grouting system in the cavity (abstract); and lifting the ground coupled member using the grouting system (abstract).
Trout is silent regarding the positioning step includes inserting a bag into the cavity, the grouting system inserting grout into the bag in the cavity.
Turzillo discloses a ground coupled member lifting (col. 2, lines 34-42) method which includes inserting a bag (11) into the cavity (fig. 2), the grouting system inserting grout into the bag in the cavity (fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Trout to include a bag in order enhance the load bearing properties of the soil.
With regard to claim 3 Trout further discloses the driving, deploying, pressurizing, rotating and conducting steps are repeated along a length of the ground coupled member before the positioning and lifting steps are carried out (claim 3).
With regard to claim 4, Trout further discloses the positioning step includes the positioning of a plurality of grouting systems spaced along the length of the ground coupled member, before executing the lifting step (claim 4).
With regard to claim 5, Trout further discloses the lifting step is caried out with the plurality of grouting systems at the same time (claim 5).
With regard to claim 6, Trout, as modified, further discloses removing the pivoting wand from the casing (eg. Trout, figs. 5,8; Turzillo figs. 1-2); coupling a bag to a grout conduit (Turzillo; figs 2-3); inserting the bag and grout conduit (Turzillo 13) into the casing; and moving the bag to the cavity as part of the positioning step (Turzillo, figs. 2-3).
With regard to claim 7, Trout, as modified, further discloses a step of inserting grout into the bag by way of the grout conduit (Turzillo, figs. 2-3).
With regard to claim 8, Trout, as modified, further discloses a step of calculating a size of the cavity (Turzillo, col. 3, lines 15-27).
With regard to claim 9, Trout, as modified, discloses the invention substantially as claimed and appears to suggest utilizing different sized bags (eg. Turzillo, figs. 3-18) fails to explicitly state a step of making the bag the size of the cavity plus the amount of desired soil displacement under the ground coupled member.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to change the size of the bag to achieve desired results based on the design conditions at hand and an artisan of ordinary skill would have had a reasonable expectation of success. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Allowable Subject Matter
Claims 1 and 10 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: see reasons for indication of allowable subject matter in the office action dated 06/17/2026.
Response to Arguments
Applicant's arguments filed 09/17/2026 have been fully considered but they are not persuasive.
In response to applicant’s arguments that claim 2-9 are allowable, the examiner disagrees. Due to the different effective filing dates, claims 2-9 are not allowable for the reasons discussed above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN F FIORELLO whose telephone number is (571)270-7012. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN F FIORELLO/Primary Examiner, Art Unit 3678
BF
09/30/2026
